The Internet Corporation for Assigned Names and Numbers (“ICANN”) is the organization that oversees domain names worldwide. It recently began accepting new applications for expanding the number of generic top-level domains (“gTLDs”) on the Internet. The most popular gTLDs until now have included .com, .info, .org, and .net. With the approval of applications for new gTLDs will come an unlimited number of new opportunities on the Internet for entrepreneurs of all types, including trademark infringers. Thus, trademark owners must make some decisons on how to address this new threat. One possibility is the new Trademark Clearinghouse.
ICANN created the Trademark Clearinghouse (“Clearinghouse”), which went live on March 26, 2013, in an effort to help trademark owners protect their brands in the midst of this expansion of available gTLDs. Trademark owners who record their marks with the Clearinghouse under the relevant procedures are entitled to: (1) first priority in registering their recorded marks as second-level domain names under the new gTLDs during the “sunrise” period (which will vary by gTLD but will be at least 30 days before the general public would be permitted to do so), and (2) receipt of notification when a domain has been registered under any new gTLD that matches the trademark owner’s recorded mark. The ICANN filing fee to record a trademark in the Clearinghouse is $150 (US) for one year, $435 for three years, and $725 for five years.
There is no deadline for recording a trademark with the Clearinghouse, but there are advantages to doing so during the “sunrise” periods. As stated above, recordation during this period provides trademark holders with advanced opportunities to obtain a second-level domain name under one of the new gTLDs before registration is open to the general public, e.g., twinkies.food. In addition, during the “trademark claims period,” which will run for at least 90 days after the initial operating period for general domain name registration under a new gTLD, those seeking registration of a domain name that matches a recorded trademark will be notified of the existence of the recorded mark. There is no mechanism in place which will automatically prevent the registration of a domain name matching a recorded trademark. Thus, although someone seeking to register a domain name which matches a recorded trademark may be notified about the existence of the recorded mark, that someone may still register that domain. Should this happen, the owner of the recorded trademark will be notified of the registration and will then have to make a unilateral decision on what action to take, if any, against the registered domain.
For those who have recorded their marks at the Clearinghouse, ICANN provides two global rights protection mechanisms for dealing with allegedly improper domain registrations: (1) the Uniform Domain Name Dispute Resolution Policy, and (2) Uniform Rapid Suspension. Each mechanism operates in a slightly different manner.
Since neither recordation with the Clearinghouse nor any other ICANN procedure actually stops registration of a domain name which matches a recorded trademark, reaction by trademark owners to the Clearinghouse has been mixed. Accordingly, each trademark owner will have to engage in its own cost/benefit analysis and weigh the pros and cons of this new system in deciding whether to record any, all, or some of its trademarks.
